119 U.S.

652
7 S.Ct. 436
30 L.Ed. 544

IVES
v.
SARGENT.1
January 10, 1887.

H. T. Blake, for appellant, Ives.

J. S. Beach and John K. Beach, for appellee, Sargent.
MATTHEWS, J.

This is a bill in equity filed by the appellant to restrain the alleged infringement
of the complainant's rights, as the assignee of Frank Davis, of reissued letters
patent No. 9,901, for an improvement in door-bolts. The original patent was
No. 202,158, dated April 9, 1878. The application for the reissue was filed
April 1, 1881, the reissued letters patent being dated October 18, 1881. The
alleged infringement is of the third and fourth claims. As the case turns wholly
upon the validity of the reissued patent, it is important, for purposes of
comparison, to set out the original and the reissue in parallel columns. So much
of the original as is excluded from the reissue is marked in brackets, and the
additions made by the reissue are in italics. They are as follows;

'ORIGINAL.

'Specifications forming part of letters patent No. 202,158, dated April 9, 1878.
Application filed January 29, 1878.

'To all whom it may concern:

'Be it known that I, Frank Davis, of North Adams, in the county of Berkshire
and state of Massachusetts, have invented certain new and useful improvements
in door-bolts; [and I do hereby declare that] the following is a [full, clear, and
exact] description [of m invention, which will enable others skilled in the art to

which it appertains to make and use the same; reference being had to the
accompanying drawings, and to letters of reference marked thereon, which form
a part of this specification.]
6

'[This invention is an improvement] on letters patent [No. 190,561,] granted to

[the undersigned] May 8, 1877.

'The [nature of said] invention consists [chiefly] in combining a cylindrical

outer casingwith an inner [casing] constructed and recessed as hereinafter
described, said [casings] combining to inclose the operating mechanism, and to
form a fulcrum and guide therefor; [and] in combining, with said [casings,] a
bolt, pitman, and [hub, so constructed and arranged as to operate in the same
without pivot-pins or any additional devices, all as] hereinafter more fully
[described] and claimed.

'In the accompanying drawings, Fig. 1 [represents the device as a whole] in

perspective. Fig. 2 [represents] a perpective view of the inner [casing and
contents.] Fig. 3 is a [detail] view of the bolt [and its attachments.] Fig. 4 is a
detail view of the inner [casing.] Fig. 5 is a detail view of the outer casing.

'[A designates a cylindrical metallic outer casing or sleeve, which is provided

with opposite openings, a, a, near its rear end, and with a hole, a 1 a2 , to inner
casing, B.

10

'It is obvious that any known equivalent fastening may be substituted for said
screw. Said casing, A, is preferably a mere shell of steel, but both the material
and thickness can be considerably varied without departing from my invention.

11

'Inner casing, B, is of brass, castiron, or other cheap metal, and has such
diameter as allows it to pass readily into said outer casing or sleeve, and to be
conveniently withdrawn therefrom. It is provided at the front end with a disk,
which has a central opening, b, for the passage of the bolt, and an annular
flange, b1 , which prevents it from being forced back too far within said exterior
casing. The bottom of said inner casing, B, has a broad longitudinal slot, b2 ,
extending from end to end, and communicating with a similar longitudinal slot,
b3 , in the top of said casing, B, which extends about two-thirds of the length of
said casing, beginning just behind said front disk. The interior of the forward
part of said inner casing is thus entirely removed, leaving vertical walls, b 4
thus produced. This space is separated by a transverse partition, b5 , from a
TRANSVERSE GROOVE, B6 , IN THE BOTTOM OF WHICH IS A

LONGITUDINAL SLOT, B7 a transverse partition, b8 , at the rear of said

groove and slot, forms part of the rear end of casing, B, and has in its top
screwthreaded hole or socket, b9 , for the reception of fastening screw, a2 .
12

'C designates the door-bolt, having guide-pins, c, on its side; and near its rear
end a recess, c', in which works the lower end of crank-arm, D', formed in one
piece with flat hub, D. Said lower end of crank-arm, D', is connected by pitman,
E, to the front part of said bolt. Said hub, D, when in position for use, extends
up through said slot, b7 , so that its square or similarly shaped central hole is in a
line with transverse groove, b6 , of inner casing, B, and opposite holes, a, a, of
outer casing, A. The prismatic shank of the key is passed through said holes
and groove, and operated as usual to shoot or draw the bolt.

13

'I do not confine myself to the exact details of construction shown, as these may
be somewhat modified in various ways without departing from the spirit of my
invention.

14

'The working parts of my mechanism are more firmly secured and more
perfectly protected than in my former patent, as hereinbefore recited. I also
deem the shape of my new hub and crank preferable for practical wo king.]

15

'Having [thus] described my [invention,] what I claim as new, and desire to

protect by letters patent, is:

16

'1. The combination, with a doorbolt and operating mechanism, of a cylindrical

exterior [casing,] and a recessed inner [casing,] said [casings] combining to
inclose the operating mechanism, and to form a fulcrum and guide therefor,
substantially as set forth.

17

'2. The combination of [casing,]A, having opposite holes, a, a, with inner

[casing,] B, having transverse groove, b6 , and slot, b7 , [flat hub,] D, [having
crank-arm, D',] and the bolt and pitman, substantially as set forth.

18

'[3. The combination of cylindrical outer casing, A, with inner casing, B,

having annular front flange, b1 , side walls, b 4 b6 , and slot, b7 , said casings
being securely fastened together, and adapted to receive the bolt and working
mechanism, substantially as set forth.]'

'REISSUE.

19

'Specification forming part of reissued letters patent No. 9,901, dated October
18, 1881. Original No. 202,158, dated April 9, 1878. Application for reissue
filed April 1, 1881.

20

'To all whom it may concern:

21

'Be it known that I, Frank Davis, of North Adams, in the county of Berkshire
and state of Massachusetts, have invented certain new and useful improvements
in door-bolts, of which the following is a description:

22

'The improvements are on the doorbolt for which letters patent were granted to
me May 8, 1877.

23

'The invention consists in combining a cylindrical outer case with an inner case,
constructed and recessed as hereinafter described, said cases combining to
inclose the operating mechanism, and to form a fulcrum and guide therefor; in
combining with said cases a bolt, pitman, and crank; and in a pitman or
connecting rod performing the functions of both pitman and spring, as the
above are hereinafter more fully set forth and claimed.

24

'In the accompanying drawings Fig. 1 shows the bolt in perspective; Fig. 2 is a
perspective view of the inner case and portions of some of the working parts;
Fig. 3 is a view of the bolt, spring and crank; Fig. 4 is a detail view of the inner
case; and Fig. 5 is a detail view of the outer case.

25

'To enable others to make and use my improvements in door-bolts, I will

describe them in detail.

26

'A, Figs. 1 and 5, is a cylindrical metallic outer case, having the holes, a, a,
near its rear end, and hole a', through which a screw, a2 , Fig. 1, passes into the
inner case, B, to hold the two cases together. The inner cylindrical case, B,
Figs. 2 and 4, is made to fit closely into the outer case, and has on its front end
a disk in which is the central opening, b. On its front end the flange, b', is
formed, ayainst which the outer case comes. A slot, b2 , Fig. 4, extends from the
disk on the front end the whole length of the case. Another slot, b3 , opposite
the slot, b2 , extends backward from the end disk, as shown in Fig. 4. These
slots leave the parts, b4 , b4 , of the inner case as shown in Fig. 4. A groove, b6 ,
extends across the case between the parts b5 and b8 of the case. A longitudinal
slot, b7 , bisects this groove, and is cut through the case.

27

'C, Fig. 3, is the bolt, made with the lugs , c, c, only one of which is used. The
projecting end is round; the part within the case is rectangular, one of the
narrower sides fitting into the slot, b2 , and the other into b3 . Its rear end is
made narrower and thinner to make room for the crank, as shown in Fig. 3.

28

'The crank, D, is made in the usual form, and is arranged in a position to bring
the hole through its arger end in line with the groove, b6 , on the inner case,
and with the openings, a, a, in the outer case.

29

'The pitman and spring, E, Fig. 3, is a straight hard-drawn wire, and is

connected to the bolt and crank by suitable pivotal connections. As shown in
the drawings, its ends are bent at right angles to its length, and pass into holes
in the bolt and crank, the spring being made long enough for the purpose. The
lug, c, on the bolt is so arranged, relative to the connections of the spring, as to
give it the required degree of tension or 'set up,' as it is called. The tension
bends the spring over the lug, c, as shown in Fig. 3.The key has its shank
square, to fit the hole in the crank, with a round part near the handle, to turn in
the case, as shown in Fig. 1.

30

'Having described my improved bolt and its mode of operation, what I claim as
new, and desire to secure by letters patent, is:

31

'1. The combination, with a door-bolt and operating mechanism, of a cylindrical

exterior case and a recessed inner case, said cases combining to inclose the
operating mechanism, and to form a fulcrum and guide THEREFOR,
SUBSTANTIALLY AS SET FORTH.

32

'2. The combination of case, A, having opposite holes, a, a, with inner case, B,
having transverse groove, b6 , and slot, b7 , crank, D, and the bolt and pitman,
substantially as set forth.

33

'3. The combination of the bolt, C. provided with the lug, c. pitman, E,
operating as a pitman and spring, and crank, D, to hold the bolt, substantially
as set forth.

34

'4. In a cylindrical door-bolt, the pitman, E, arranged and adapted to operate

as a pitman and spring, substantially as set forth.'

35

It will be observed that the first and second claims of the reissued patent are
substantially the same as the first and second claims of the original patent; but

as there is no allegation or proof of any infringement by the appellee of either

of these, they may both be dismissed from further consideration. The third
claim of the original patent is omitted from the reissue, its place being taken by
the third and fourth claims of the latter. The whole question is whether the
patentee and his assignee are entitled, under the circumstances of the case, to
claim the pitman, E, operating as a pitman and spring in a door-bolt, as a
distinct and separate invention, irrespective of its combination with the exterior
and interior cases mentioned in the first and second claims. This right is
affirmed by the appellant, and denied by the appellee.
36

The invalidity of the reissued patent is maintained by the appellee on two

grounds: (1) That the reissue embraces a different invention in the third and
fourth claims from any described or contained in the original specification; and
(2) that, if it were otherwise, the patentee and assignee had, at the time of the
application for a reissue, lost their rights to correct the defects in the original by
their own laches. It was upon the latter of these grounds that the circuit court
proceeded in dismissing the bill. The undisputed facts on this part of the case
are stated by the circuit court in its opinion, and are as follows:

37

'The inventor, a carpenter by trade, and not an educated man, invented the
device in November, 1877, and applied, in January, 1878, to Mr. Terry, a patent
solicitor in New Haven, to procure him a patent, specifying, as the invention to
be patented, the pitman, which, in connection with the crank, held the bolt, and
answered the double purpose of pitman and spring. Terry, being in ill health,
and therefore not then doing business, sent the case to his agent in Washington,
with Davis' instructions. In due time the papers were returned to Terry, and
were signed by Davis, who read them, and supposed that the application
'covered the spring, which he intended to be patented.' Terry did not read the
application. The patent was received by Davis in Ap il, 1878. It does not appear
whether it was then examined or not. The plaintiff did not see the patent until
after it was assigned to him, on May, 28, 1879. Whether he then read it or not
he does not know; but in the latter part of 1880, after the defendant had begun
to infringe, he did read it, and supposed, from the drawings, that the pitman
spring, as a separate invention, was secured by the patent, until he was
undeceived by Mr. Terry. In the spring of 1878 the plaintiff received from
Davis a license to use the pitman spring upon another than the patented bolt. In
September, 1880, Sargent & Co. commenced work upon the patterns for the
infringing bolt, and made the first bolts December 1, 1880.' Ives v. Sargent, 21
Blatchf. 417; S. C. 17 Fed. Rep. 447.

38

The application for the reissue was not made until after the lapse of nearly three
years from the date of the original patent; that is, from April 9, 1878, until

April 1, 1881. It may be assumed, as the effect of the evidence, that Davis, in
describing to his solicitor. Terry, the invention which he wished to have
patented, specifically designated and described the pitman spring as his
substantial invention, distinct from the combination of which it formed a part in
the first and second claims of the patent. In his testimony on this point, in
answer to the question, 'What did you describe to him as the invention which
you wished to have patented?' Davis states: 'I explained to Mr. Terry that I had
got the spring, answering for a spring, and also for turning the bolt,a pitman
spring. I didn't know the term at that time.' And also that he wished to have
patented 'this pitman spring, and this guard, lever, and that purchase it had in
holding the bolt out or back; also, in moving the bolt out and back.' Terry, also,
on the same point, says, that Davis 'brought the invention or bolt to me, and
stated that he wanted to get it patented. He also stated what his invention was,
as he considered it, that he wanted patented, and the thing that he wanted
patented particularly was the pitman or connecting rod which answered the
double purpose of pitman and spring, and, in connection with the crank, held
the bolt when it was shoved out of the case, and when it was drawn within the
case.' Terry also states that he sent 'a letter of instructions with the model,
setting forth Mr. Davis' wishes as he had expressed them to me.' The
specification, as prepared by the solicitor in Washington, was returned to Terry,
and by him exhibited to Davis, who signed the application, as he states, after he
had examined it and supposed it to be right, 'covering the spring which I
intended to be patented.' Mr. Terry states that he does not recollect whether he
himself read over the specification and examined the claims at the time Mr.
Davis signed the papers, or not. On this application the patent was issued, and it
does dot appear to have been read or examined by any of the parties is interest
until after the appellee commenced making the bolts now alleged to be an
infringement. It was then discovered for the first time that the original patent
did not cover the claim as now made, and the ressue was obtained to effect that
purpose.
39

It is admitted in argument by the counsel for the appellant that there was
negligence. It is contended, however, that it was not the negligence which in
law is imputable to the patentee or the appellant, but the negligence of the
solicitor employed by the patentee to obtain the patent. Counsel say: 'It was the
Washington solicitor's disobedience to instructions which caused the mistake,
and Terry's neglect to revise the application before sending for Davis to sign it,
which prevented its discovery.'

40

The rule of diligence required in such cases, as the result of previous decisions
of this court, is stated in Wollensak v. Reiher, 115 U. S. 96, 99, S. C. 5 Sup. Ct.
Rep. 1137, in these words: 'It follows from this that if, at the date of the issue

of the original patent, the patentee had been conscious of the nature and extent
of his invention, an inspection of the patent when issued, and an examination of
its terms, made with that reasonable degree of care which is habitual to and
expected of men in the management of their own interests in the ordinary
affairs of life, would have immediately informed him that the patent had failed
fully to cover the area of his invention. And this must be deemed to be notice to
him of the fact, for the law imputes knowledge when opportunity and interest,
combined with reasonable care, would necessarily impart it. Not to improve
such opportunity, under the stimulus of self-interest, with reasonable diligence,
constitutes laches, which in equity disables the party who seeks to revive the
right which he has allowed to lie unclaimed from enforcing it to the detriment
of those who have in consequence been allowed to act as though it were
abandoned.'
41

In Mahn v. Harwood, 112 U. S. 354, 362, S. C. 5 Sup. Ct. Rep. 174, it was
stated that, 'if a patentee has not claimed as much as he is entitled to claim, he is
bound to discover the fact in a reasonable time, or he loses all right to a reissue;
and if the commissioner of patents, after the lapse of such reasonable time,
undertakes to grant a reissue for the purpose of correcting the supposed
mistake, he exceeds his power, and acts under a mistaken view of the law. The
court, seeing this, has a right, and it is its duty, to declare the reissue pro tanto
void in any suit founded upon it.' It is also settled that, while no invariable rule
can be laid down as to what is a reasonable time within which the patentee
should seek for the correction of a claim which he considers too narrow, a delay
of two years, by analogy to the law of public use before an application for a
patent, should be construed equally favorable to the public, and that excuse for
any longer delay than that should be manifest by the special circumstances of
the case. Wollensak v. Reiher, 115 U. S. 96, 100; S. C. 5 Sup. Ct. Rep. 1137;
Mahn v. Harwood, 112 U. S. 354, 363; S. C. 5 Sup. Ct. Rep. 174.

42

In the present case no special circumstances in excuse for the delay are alleged.
The excuse proffered is simply an attempt to shift the responsibility of the
mistake, as originally made, from the patentee to his solicitor; but no excuse is
offered why the patentee did not discover the negligence and error of his
solicitor in due time. On the contrary, he assumed, without examination, that
the specification and claims of his patent were just what he had desired and
intended they should be, and rested quietly in ignorance of the error and of his
rights for nearly three years, and then did not discover them until after others
had discovered that he had lost the right to repair his error by his neglect to
assert it within a reasonable time. We are therefore of opinion that the circuit
court was clearly in the right in deciding the reissue void as to the third and
fourth claims, on the ground that the right to apply for it had been lost by the

laches of the patentee and his assignee.

43

We are also of opinion, however, that the reissue is void on the other ground,
viz., that it contains new matter introduced into the specification, and that it is
not for the same invention as that described in the original patent. In support of
the reissued patent, on this ground, it is contended on the part of the appellant,
that the invention of the pitman-spring device is shown in the drawings, which
are the same both in the original and the reissued patents. All that can be said in
respect to the drawings is that they show the pitman-spring device as a part of
the bolt intended to be covered by the patent, and described as a combination of
which that device forms a part. There is nothing whatever in the drawings to
show that the patentee claimed to be the inventor of that part, separate from the
combination, as a distinct novelty, useful by itself, or in any other combination;
neithe is it so described in the specification. The operating mechanism of the
bolt, as distinct from the casings, which are described as forming a fulcrum and
guide to it, is described as 'a bolt, pitman, and hub so constructed and arranged
as to operate in the same [said casings] without pivot pins or any additional
devices.' It is argued, on this language, that the only additional device usual in
such cases is a spring, and that, therefore, the meaning of the specification is
that no separate spring was required, and from that the inference is to be made
that the pitman should operate both as a pitman and a spring; but this inference
is entirely too obscure and remote. It is not obvious that the additional device
referred to was a spring, and there is nothing in the language to suggest, what is
clearly and fully expressed in the amended specification, that 'the pitman and
spring, E, Fig. 3, is a straight, hard-drawn wire, and is connected to the bolt and
crank by suitable pivotal connections.' So that in the original description there
is nothing to show of what material the pitman is made so as to operate as a
spring, and there is no assertion in it of its performing the double function of
pitman and spring.

44

In this view, therefore, the case comes within the rule as stated in Coon v.
Wilson, 113 U. S. 268, 277; S. C. 5 Sup. Ct. Rep. 537. There, as here, the lapse
of time, and laches based upon it, were considered immaterial, because the
reissued patent was for a different invention from that described in the original.
'The description had to be changed in the reissue, to warrant the new claims in
the reissue. The description in the reissue is not a more clear and satisfactory
statement of what is described in the original patent, but is a description of a
different thing.'

45

We are therefore constrained to the conclusion that the addition of the third and
fourth claims, with the corresponding alterations in the specification, is such an
expansion of the invention as originally described as to destroy its identity, and

to that extent to avoid the reissued patent. For these reasons the decree of the
circuit court is affirmed.

Affirming 17 Fed. Rep. 447.